Nike International Ltd

This matter concerned a defensive trade mark application by Nike International Limited for the word "NIKE" in class 3, covering soaps, perfumery, and other cosmetic and hygiene products. The application faced rejection under section 44 of the *Trade Marks Act 1995* due to the existence of two earlier trade mark registrations owned by Campomar Sociedad Limitada, also for the mark "NIKE" in class 3. The dispute arose when the Campomar registrations were removed from the Register, leading to the acceptance of Nike International's application, only for those registrations to be subsequently reinstated following a High Court appeal.

The delegate of the Registrar of Trade Marks was required to determine whether the acceptance of Nike International's application should be revoked under section 38(1)(b) of the Act, on the grounds of special circumstances. This involved considering whether the removal and subsequent reinstatement of the Campomar trade marks constituted such special circumstances as to justify reversing the earlier acceptance of the Nike International application, particularly in light of the fact that the cited registrations, when on the Register, presented valid grounds for rejection.

The delegate reasoned that the reinstatement of the Campomar registrations meant they should be treated as if they had never been removed from the Register. Consequently, the acceptance of Nike International's application, which had proceeded on the basis that the cited registrations no longer existed, was no longer justifiable. The delegate found that the removal and subsequent reinstatement of the Campomar registrations constituted special circumstances within the meaning of section 38(1)(b), and that in these circumstances, the Nike International trade mark should not be registered. The delegate also considered whether the application could be registered subject to conditions or limitations but found no viable avenue to overcome the conflict with the reinstated Campomar registrations.

The delegate revoked the acceptance of Nike International's application under paragraph 38(1)(b) of the *Trade Marks Act 1995*, finding that the special circumstances warranted this action. The application was then directed to be referred back to the examiner for re-examination.